www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/378,815
`
`07/19/2021
`
`JUN YOKOYAMA
`
`083710-3441
`
`1032
`
`Rimon PC - Panasonic Corporation
`8300 Greensboro Dr.
`Suite 500
`McLean, VA 22102
`
`CHOU, JIMMY
`
`3761
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`10/15/2024
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`USPTOmail @rimonlaw.com
`
`eofficeaction @appcoll.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Office Action Summary
`
`Application No.
`17/378,815
`Examiner
`JIMMY CHOU
`
`Applicant(s)
`YOKOYAMA etal.
`Art Unit
`AIA (FITF) Status
`3761
`Yes
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`
`
`1) Responsive to communication(s) filed on 07/19/2021.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() This action is FINAL. 2b)¥)This action is non-final.
`3) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)(2) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1-18 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) 9-12 and 16-18 is/are withdrawn from consideration.
`() Claim(s)__is/are allowed.
`Claim(s) 1 is/are rejected.
`)
`Claim(s) 2-8 and 13-15 is/are objected to.
`(J Claim(s
`are subject to restriction and/or election requirement
`)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`Application Papers
`10)C) The specification is objected to by the Examiner.
`11)) The drawing(s) filed on 07/19/2021 is/are: a) accepted or b)C) objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`
`Priority under 35 U.S.C. § 119
`12)(¥) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`__c)LJ None ofthe:
`b)LJ Some**
`a)¥) All
`1.{¥) Certified copies of the priority documents have been received.
`2.1) Certified copies of the priority documents have been received in Application No.
`3.2.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`*“ See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`4)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20241009
`
`

`

`Application/Control Number: 17/378,815
`Art Unit: 3761
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AlA or AIA Status
`
`The present application, filed on or after March 16, 2013,
`
`is being examined
`
`underthefirst inventor to file provisions of the AIA.
`
`Election/Restrictions
`
`Applicant’s election without traverse of Group | in the reply filed on 07/24/2024 is
`
`acknowledged.
`
`Claims 9-12 and 16-18 are withdrawn from further consideration pursuant to 37
`
`CFR 1.142(b) as being drawn to anonelected GroupIl, there being no allowable
`
`generic or linking claim. Election was made withouttraverse in the reply filed on
`
`07/24/2024.
`
`Examinercalled the attorney on 10/08/2024 with respect to the election
`
`restriction. The attorney confirms that the elected Group | including claims 1-8 and 13-
`
`15, and the withdrawn Group Il including withdrawn claims 9-12 and 16-18.
`
`

`

`Application/Control Number: 17/378,815
`Art Unit: 3761
`
`Page 3
`
`Claim Interpretation
`
`The following is a quotation of 35 U.S.C. 112(f):
`
`(f) Elementin Claim fora Combination. -An elementin aclaim for a combination may be
`expressed as a meansor step for performing a specified function without the recital of
`structure, material, or acts in supportthereof, and such claim shall be construed to cover the
`corresponding structure, material, or acts describedin the specification and equivalents
`thereof.
`
`The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
`
`An elementin aclaim fora combination may be expressed as a means or step for performing
`a specified function without the recital of structure, material, or acts in supportthereof, and
`such claim shall be construed to cover the corresponding structure, material, or acts
`describedin the specification and equivalents thereof.
`
`The claims in this application are given their broadest reasonable interpretation
`
`using the plain meaning of the claim languagein light of the specification as it would be
`
`understood by oneofordinary skill
`
`in the art. The broadest reasonable interpretation of
`
`a Claim element (also commonly referred to as a claim limitation) is limited by the
`
`description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
`
`paragraph,
`
`is invoked.
`
`As explained in MPEP § 2181, subsection |, claim limitations that meet the
`
`following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AlIA 35
`
`U.S.C. 112, sixth paragraph:
`
`(A)
`
`the claim limitation uses the term “means”or “step” or a term used as a substitute
`
`for “means” that is a generic placeholder (also called a nonce term or a non-
`
`structural term having no specific structural meaning) for performing the claimed
`
`function;
`
`the term “means”or “step” or the generic placeholder is modified by functional
`
`language,
`
`typically, but not alwayslinked by the transition word “for” (e.g.,
`
`

`

`Application/Control Number: 17/378,815
`Art Unit: 3761
`
`Page 4
`
`“meansfor’) or another linking word or phrase, such as “configured to” or “so
`
`that”: and
`
`(C)
`
`the term “means” or “step” or the generic placeholder is not modified by sufficient
`
`structure, material, or acts for performing the claimed function.
`
`Use of the word “means?”(or “step”) in a claim with functional language creates a
`
`rebuttable presumption that the claim limitation is to be treated in accordance with 35
`
`U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim
`
`limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
`
`paragraph,
`
`is rebutted whenthe claim limitation recites sufficient structure, material, or
`
`acts to entirely perform the recited function.
`
`Absence of the word “means” (or “step”) in aclaim creates a rebuttable
`
`presumption that the claim limitation is not to be treated in accordance with 35 U.S.C.
`
`112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim
`
`limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
`
`paragraph,
`
`is rebutted whenthe claim limitation recites function without reciting
`
`sufficient structure, material or acts to entirely perform the recited function.
`
`Claim limitations in this application that use the word “means” (or “step”) are
`
`being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph,
`
`except as otherwise indicated in an Office action. Conversely, claim limitations in this
`
`application that do not use the word “means” (or “step”) are not being interpreted under
`
`35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise
`
`indicated in an Office action.
`
`

`

`Application/Control Number: 17/378,815
`Art Unit: 3761
`
`Page 5
`
`This application includes one or moreclaim limitations that do not use the word
`
`“means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AlA 35
`
`U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder
`
`that is coupled with functional language without reciting sufficient structure to perform
`
`the recited function and the generic placeholder is not preceded by a structural modifier.
`
`Such claim limitation(s) is/are:
`
`(1) “ameasurementlight deflection unit configured to change an incident angle of
`
`the measurementlight on the coupling mirror’ in claim 1.
`
`(2) “a beam position measurement unit configured to measure positions of the
`
`processing laser light and the measurementlight” in claim 1.
`
`Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C.
`
`112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph,
`
`it/they is/are being interpreted to
`
`cover the corresponding structure described in the specification as performing the
`
`claimed function, and equivalents thereof.
`
`(1) “a measurementlight deflection unit” in claim 1
`
`is interpreted as “[0055] First
`
`mirror 13 and measurementlight deflection unit 17 are movable mirrors that can
`
`perform a rotational operation in two or more axes.First mirror 13 and measurement
`
`light deflection unit 17 are, for example, galvano mirrors’.
`
`(2) “a beam position measurementunit” in claim 1
`
`is interpreted as “position
`
`measurement mirror 39, two-dimensional
`
`imaging element 40, and beam
`
`terminator 41.” ([0120]) and “Two-dimensional
`
`imaging element 40 has a function
`
`of measuring positions of processing laserlight 11 and measurementlight 15.
`
`Two-dimensional
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`imaging element 40 may be any sensor as long as the sensor
`
`

`

`Application/Control Number: 17/378,815
`Art Unit: 3761
`
`Page 6
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`has sensitivity to wavelengths of processing laser light 11 and measurement
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`light 15, and acommercially available industrial camera including an element
`
`such as acharge-coupled device (CCD), a complementary metal oxide-
`
`semiconductor (CMOS), or indium gallium arsenide (InGaAs), a two-dimensional
`
`beam profiler, or the like can be used therefor” ([(0126]) and “Beam
`
`terminator 41 has a function of terminating processing laser light 11 transmitting
`
`through position measurement mirror 39” ([0127]).
`
`If applicant does not intend to havethis/these limitation(s) interpreted under 35
`
`U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may:
`
`(1) amend the
`
`claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AlA
`
`35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the
`
`claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s)
`
`sufficient structure to perform the claimed function so as to avoid it/them being
`
`interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
`
`

`

`Application/Control Number: 17/378,815
`Art Unit: 3761
`
`Page 7
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis forall
`
`obviousness rejections set forth in this Office action:
`
`A patent fora claimed invention may notbe obtained, notwithstanding thatthe claimed
`invention is not identically disclosed as set forth in section 102, if the differences between the
`claimed invention and the prior artare such that the claimed invention as a whole would have
`been obvious beforethe effective filing date of the claimed invention to a person having
`ordinary skill in the art to which the claimed invention pertains. Patentability shall notbe
`negated by the mannerin whichthe invention was made.
`
`Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Webster
`
`(US 9,757,817) in view of Takagawaetal. (US 2020/0033452), Urashimaet al. (US
`
`2012/0285936) and Strebel (US 2019/0143458).
`
`Regarding claim 1, Webster discloses “a laser processing apparatus” (abstract
`
`and fig.2) comprising:
`
`“a laser oscillator” (/7) “configured to oscillate processing laserlight to be
`
`incident on a processing point on a processing surface of a workpiece” (/7 emits a laser
`
`16 ona surface ofa workpiece);
`
`“a coupling mirror” (79) “configured to deflect or transmit the processing laser
`
`light and measurementlight to be incident on the processing point toward the
`
`processing point” (col./0 at lines 40-45, i.e., the mirror 19 is actuated by a motorized system
`
`(not shown));
`
`“a measurementlight deflection unit” (col./0 at lines 40-45,i.e., the mirror 19 is
`
`actuated by a motorized system (not shown). The motorized system is considered as a
`
`measurementlight deflection unit) “configured to change an incident angle of the
`
`measurementlight on the coupling mirror” (col./0 at lines 40-45,i.e., the mirror 19 is
`
`actuated by a motorized system (not shown));
`
`

`

`Application/Control Number: 17/378,815
`Art Unit: 3761
`
`Page 8
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`“a lens” (/8) “configured to concentrate the processing laser light and the
`
`measurementlight on the processing point” (fig.2, 78 and col.10 at lines 30-35, i.e., the
`
`laser beam 16 is collimated by optics and focused by optic 18 such that keyhole weldingis
`
`achieve on the sample);
`
`Webster is silent regarding a controller configured to control the laser oscillator
`
`and the measurementlight deflection unit; a measurement processor configured to
`
`measure a depth of a keyhole generated at the processing point by the processing laser
`
`light by using an optical interference signal based on an interference generated by an
`
`optical path difference between the measurementlight reflected at the processing point
`
`and referencelight; and a beam position measurement unit configured to measure
`
`positions of the processing laser light and the measurementlight.
`
`Takagawaet al. teaches “a controller’ (/8/) “configured to control the laser
`
`oscillator and the measurementlight deflection unit” ({0040],i.e., The control
`
`unit 18 includes: a system control unit 181 that controls the entirety of the system including the
`
`laser light source control circuit 131, the drive circuit 151, and the light detector control
`
`circuit 161; and a data processing unit 182 thatprocess obtained data, performs correction
`
`calculation using data, and outputs the result. [0041], i.e., The MEMS mirror 15 is driven by the
`
`drive circuit 151 to rotate to form an angle ofreflection, which is differentfrom an angle for the
`
`light emission. [0041] The laser light source 13 is driven by the laser light source control
`
`circuit 13] for light emission. Examiner noted that 181 is used to control the laser light source
`
`control circuit 131 which controls the laser light source 13 and 181 is also used to control 151
`
`which controls MEMSmirror 15).
`
`\twould have been obvious to oneof ordinary skill in
`
`the art at the time the invention wasfiled to modify Webster with Takagawaetal., by
`
`

`

`Application/Control Number: 17/378,815
`Art Unit: 3761
`
`Page 9
`
`adding Takagawaet al.’s controller unit to Webster's system, to enhance accurate
`
`detection of a scan position (para.0008) as taught by Takagawaetal.
`
`Urashimaet al. teaches “a measurement processor” (fig./, /12b.
`
`[0042] The
`
`computer 112 includes a measuring unit 1 12b that measures the penetration depth ofthe welded
`
`part 102 based onthe electric signal (digital signal) ofthe coherent lightfrom the A/D converter
`
`119)“configured to measure a depth of a keyhole generated at the processing point by
`
`the processing laserlight by using an optical interference signal based on an
`
`interference” ({0042] The computer 112 includes a measuring unit 112b that measures the
`
`penetration depth ofthe welded part 102 based onthe electric signal (digital signal) ofthe
`
`coherent lightfrom the A/D converter 119) generated by “an optical path difference
`
`between the measurementlight reflected at the processing point and referencelight”
`
`([0042 ], i.e., Coherence in the coherentlight correspondsto a difference betweenthe optical
`
`path length ofthe object beam 1 13a and the optical path length of the reference beam 113b);
`
`and “a beam position measurementunit” (/05) “configured to measure positions of the
`
`precessingdasertight and the measurementlight” ({005/] The optical interferometer 105
`
`has a structure for measuring the reflection position ofthe object beam 11 3a. [0090], i.e., the
`
`position of the spot 107b ofthe laser beam 107a in the moving direction of the movable stage
`
`110. This suggest that the interferometer 105 is capable of measuring positions ofobject beam).
`
`It would have been obvious to one of ordinary skill in the art at the time the invention
`
`wasfiled to modify Webster with Urashima et al., by incorporating Urashima etal.’s
`
`optical interferometer to Urashima etal.’s device, to provide better accuracy
`
`measurement of penetration depth of the workpiece (para.0039) as taught by Urashima
`
`et al.
`
`

`

`Application/Control Number: 17/378,815
`Art Unit: 3761
`
`Page 10
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`The combination of Webster, Takagawaet al. and Urashimaetal. is silent
`
`regarding a beam position measurement unit configured to measure positions
`
`processing laserlight.
`
`However, examiner noted that Urashima et al. teaches the laser beam 107a is
`
`co-axial with the object beam _118a, and the reflected object beam 113a is measured by
`
`the interferometer 105. However, Urashima etal. is silent whether the reflected laser
`
`beam 107a can be measured by the interferometer 105. Strebel also teaches
`
`superimposing the laser beam 10 and the measuring beam 15 coaxially (para.0042)
`
`and determining laser beam position using OCT.
`
`Strebel teaches “a beam position measurement unit configured to measure
`
`positions processing laser light” ({/0043/, i.e., the position ofthe measuring beam 15 on the
`
`component can be moved by meansofa separate actuator systemor scanner unit. The sensor
`
`principle for the distance measurement may be based, for example, on optical short-coherence
`
`interferometry (OCT)... One significant advantage can be seen in that the component geometry
`
`around the current position of the machining laser beam 10 can be measured with the
`
`measuring beam 15 independently ofthe motion of the machining laser beam 10 during the
`
`process. Examiner interpreted as the OCTis the beam position measurement unit). lt would
`
`have been obvious to one of ordinary skill in the art at the time the invention wasfiled to
`
`further modify Webster with Strebel, by adding Strebel’s measuring process to modified
`
`Webster’s interferometer process, to enhance quality of welding process (para.0045) as
`
`taught by Strebel.
`
`

`

`Application/Control Number: 17/378,815
`Art Unit: 3761
`
`Page 11
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`Allowable Subject Matter
`
`Claims 2-8 and 13-15 are objected to as being dependent upon a rejected base
`
`claim, but would be allowable if rewritten in independent form including all of the
`
`limitations of the base claim and anyintervening claims.
`
`Conclusion
`
`Anyinquiry concerning this communication or earlier communications from the
`
`examiner should be directed to JIMMY CHOU whosetelephone numberis (571)270-
`
`7107. The examiner can normally be reached Mon-Friday.
`
`Examinerinterviews are available via telephone,
`
`in-person, and video
`
`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
`
`interview, applicant is encouraged to use the USPTO AutomatedInterview Request
`
`(AIR) at http:/Avwww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Helena Kosanovic can be reached on (571) 272-9059. The fax phone
`
`number for the organization where this application or proceeding is assigned is 571-
`
`273-8300.
`
`Information regarding the status of published or unpublished applications may be
`
`obtained from Patent Center. Unpublished application information in Patent Centeris
`
`available to registered users. To file and manage patent submissions in Patent Center,
`
`visit: httos://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-
`
`

`

`Application/Control Number: 17/378,815
`Art Unit: 3761
`
`center for more information about Patent Center and
`
`Page 12
`
`https://www.uspto.gov/patents/docx for information aboutfiling in DOCX format. For
`
`additional questions, contact the Electronic Business Center (EBC) at 866-217-9197
`
`(toll-free).
`
`If you would like assistance from a USPTO Customer Service
`
`Representative, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/JIMMY CHOU/
`Primary Examiner, Art Unit 3761
`
`